|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
Hewlett-Packard Company v. Alvaro Collazo
Claim Number: FA0302000144628
PARTIES
Complainant
is Hewlett-Packard Company, Palo
Alto, CA, USA (“Complainant”) represented by Molly Buck Richard, of Thompson & Knight LLP. Respondent is Alvaro Collazo, Tarariras, Colonia, Republic of Uruguay
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <hpcanada.com>,
registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Houston
Putnam Lowry, Chartered Arbitrator, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on February 5, 2003; the Forum received
a hard copy of the
Complaint on February 10, 2003.
On
February 7, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by
e-mail to the Forum that the domain name <hpcanada.com>
is registered with Iholdings.Com, Inc.d/b/a Dotregistrar.Com and that the
Respondent is the current registrant of the name. Iholdings.Com, Inc. d/b/a Dotregistrar.Com has verified that
Respondent is bound by the Iholdings.Com, Inc. d/b/a Dotregistrar.Com
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On
February 10, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of March 3, 2003 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via
e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts,
and to postmaster@hpcanada.com by e-mail.
A
timely Response was received on February 13, 2003.
Additional
material was submitted by the Complainant, which was received by the National
Arbitration Forum on February 15, 2003.
On February 19, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Houston Putnam
Lowry as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
claims as follows:
A. CONFUSINGLY SIMILAR DOMAIN NAME (ICANN
Rule 3(b)(ix)(1) and ICANN Policy ¶ 4(a)(i)):
The domain name <hpcanada.com> registered by
Collazo is confusingly similar to Complainant’s famous HP mark, which was
registered as a trademark throughout
the world long before Collazo registered
the domain name on November 3, 2002.
The Respondent’s domain name contains Complainant’s exact mark, “HP,”
with a non-distinctive geographically descriptive term, “Canada,”
and the most
common URL suffix “.com.” “The mere
addition of descriptive or generic words to a famous mark, however, does not
eliminate the similarity between the domain
name and the trademark.” Caterpillar Inc. v. Stephen R. Vine,
FA 97097 (Nat. Arb. Forum June 22, 2001). See also Sony Kabushiki Kaisha v.
Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “neither the
addition of an ordinary descriptive word… nor the suffix ‘.com’ detract
from the overall impression of the
dominant part of the name in each case, namely the trademark SONY”).
Complainant’s HP Marks were in
use almost 60 years prior to Respondent’s
registration of the domain name <hpcanada.com>. Furthermore, consumers seeking information
on Hewlett-Packard products or services available in Canada could easily assume
that a
site with the domain name <hpcanada.com> is associated with
Hewlett-Packard, and would be highly surprised to discover that the owner of
the domain name has no relationship
to Hewlett-Packard. Respondent is not a
licensee and is not affiliated with Complainant in any manner. Respondent’s
continued use
of the domain name <hpcanada.com> is likely to
confuse Complainant’s customers and potential customers into believing that
there is some affiliation, connection,
sponsorship, approval or association
between the Respondent and Complainant when in fact none exists.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN
DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Collazo has
no rights or legitimate interests in the <hpcanada.com> domain
name. He is simply exploiting the fact
that Hewlett-Packard’s customers and potential customers will, from time to
time, include the geographic
term “Canada” in a domain address when looking for
information on Hewlett-Packard’s business in Canada. He is attempting to confuse and to divert such customers to his
Internet website for his own commercial gain through a posting of
links on his
website and the presence of advertising, including “pop-up” advertising. Collazo uses the <hpcanada.com>
domain name to post links to commercial websites, some of which sell computers
and related software and services, which is the
same business in which
Hewlett-Packard engages. (See printout
from <hpcanada.com> at Exhibit C.) Certain links lead to websites operated by Dell Computer
Corporation and Gateway, Inc., direct competitors of Hewlett-Packard. Collazo’s <hpcanada.com>
website also initiates “pop-up” advertising and contains large advertisements
on the website home page itself. (See
Exhibit C and additional printouts from <hpcanada.com> at Exhibit
D.) All of these advertisements are for
products or services offered by third-party businesses, not by Collazo himself.
This use is not a bona-fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or noncommercial or fair use of the domain
name
pursuant to Policy ¶ 4(c)(iii). See
Toronto-Dominion Bank v. Karpachev, 188 F. Supp. 2d 110, 114 (D. Mass.
2002) (finding that, because Respondent’s sole purpose in selecting the domain
names was to cause confusion with Complainant’s
website and marks, its use of
the names was not in connection with the offering of goods or services or any
other fair use); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204
(WIPO Dec. 8, 2000) (finding that a respondent who sought profit by redirecting
Internet traffic connected with the MSNBC
mark had no rights or legitimate
interests in the famous mark); N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona-fide use where Respondent
used the domain name to divert Internet users
to its competing website); Big
Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding
no legitimate use of a mark when a respondent was using another’s marks to
divert
Internet users to its own website).
On information and belief, Respondent is not known by, and
is not affiliated with any business known by, the name “hpcanada.com,”
“hpcanada,” or any similar name or mark.
Hewlett-Packard has never granted Respondent permission to use the HP
mark or any similar name or mark.
Respondent is in no way affiliated with Hewlett-Packard. Respondent does not sell any of
Complainant’s products. Thus,
Respondent does not meet the requirements of Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that when a respondent was
not known by a mark it did not have rights in a domain
name incorporating that
mark); see also General Mills, Inc. v. Zuccarini, FA 97050 (Nat.
Arb. Forum May 30, 2001) (finding that the respondent had no rights or
legitimate interests in a domain name that
misspelled a famous mark and that
led users to a series of advertisement sites, stating that a “[r]espondent may
not utilize close
derivations of famous and distinctive trademarks and, thus,
profit from Internet users’ misspelling the Internet destinations they
desire;
Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that a
respondent was not commonly known by the mark contained in the domain name
where
the complainant, Nokia Corp., had not permitted the respondent to use the
NOKIA mark and no other facts or elements justified prior
rights or a legitimate
connection to the name “NOKIA” or “wwwnokia”); Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding that a respondent
had no rights or legitimate interest in the disputed domain name where
it was
not commonly known by the mark and never applied for a license or permission to
use the mark).
Here, it is
clear that Collazo has no rights or legitimate interests in the disputed domain
name, <hpcanada.com>, thus Policy ¶ 4(c)(ii) has been satisfied.
C. REGISTRATION AND USE IN BAD FAITH (ICANN
Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Collazo uses the HP mark in the <hpcanada.com>
domain name to divert Internet users to a website that links to other
commercial websites, some of which sell competitive computers
and related
software and services and that contains pop-up and other advertisements. This is a commercial purpose for which
Collazo has no legitimate reason to use the name or mark “HP” or
“hpcanada.com.” By diverting consumers
to sites selling computers and computer-related products and services and by
placing third-party advertisements
on the site, Collazo is opportunistically
attempting to trade on and to profit from the goodwill in and fame of
Complainant’s mark. Collazo can be
presumed to have known of Complainant’s famous HP mark – it is not a common
word and yet is incorporated in its entirety
into Respondent’s domain name.
Registration of a domain name, despite knowledge of
Complainant’s rights, is evidence of bad faith registration pursuant to Policy
¶ 4(a)(iii). See Entrepreneur Media,
Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that
“[w]here an alleged infringer chooses a mark he knows to be similar to another,
one
can infer an intent to confuse”); see also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly
known mark at
the time of registration). In addition,
Collazo’s behavior constitutes bad faith registration and use under Policy ¶
4(c)(iv). See General Mills, supra
(finding bad faith where the respondent linked the disputed domain name, which
was a misspelling of a famous mark, to a series of
other advertisement
websites, and noting that similarity or dissimilarity of products is not a
factor under the ICANN Policy or the
current law of famous marks); see also
America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding a
suggestion of opportunistic bad faith where a mark was obviously connected with
the complainant
and its products and where respondent had no connection with
the complainant or its products); AltaVista v. Krotov, D2000-1091 (WIPO
Oct. 25, 2000) (finding bad faith under Policy ¶ 4(c)(iv) where the respondent
linked the domain name to an Internet
site that advertised and offered numerous
web services); ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept.
15, 2000) (finding bad faith when the website in dispute was linked by the
respondent to a second
website, from which second website the respondent
presumably received a portion of advertising revenue because of his direction
of
Internet traffic to that site); Perot Sys. Corp. v. Perot.net, FA
95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name
in question is obviously connected with the Complainant’s
well known marks,
thus creating a likelihood of confusion strictly for commercial gain).
Respondent’s only possible reason for using the domain name
<hpcanada.com> is to intentionally attract, for commercial gain,
Internet users to Respondent’s website by creating a likelihood of confusion
with Complainant’s mark as to the source, sponsorship, affiliation, or
endorsement of Respondent’s website.
B.
Respondent
According
to the Respondent:
I have registered this domain to create a
portal of resources for Canadian expatriates in Uruguay and the rest of South
America. HP
in my domain stands for "Home Page". Giving Hewlett
Packard exclusivity over the two letter combination "HP"
is completely
irrational and against the spirit of the Internet and the UDRP.
The domain was parked with the registrar
while in development and I didn't realize that there were offers for products
competing with
Hewlett Packard since that advertising is not controlled by me.
I have now forwarded the domain to a dedicated parking page with
no
advertising.
C.
Additional Submissions
Complainant
submitted additional material contending:
Respondent does not deny in his e-mailed
comments that Hewlett-Packard is the owner of the “HP” trademark or any of the
many registrations
described in the complaint or that sixty years of
significant and extensive use of the HP marks have made those marks famous and
distinctive. He does voice his dislike
of that portion of well-established trademark law that allows Hewlett-Packard
to exclude others from using
its distinctive, famous “HP” mark in a manner
likely to confuse others, but that dislike is, unfortunately for Collazo,
irrelevant
to the famous and highly-distinctive nature of the HP marks and the
effect that status has on the ability of others to use “HP” in
commerce.
Respondent’s only attempt to defend
his bad-faith infringing activity is to say that “HP” in his domain name stands
for “Home Page,”
and to claim not to have known what advertising was being
placed on his <hpcanada.com> site. Hewlett-Packard notes that the advertising at <hpcanada.com>
was the same advertising that still appears on another of Respondent’s
websites, <alvarocollazo.com>.
Respondent admits that the advertising contained “offers for products
competing with Hewlett Packard.”
Respondent claims that he has now forwarded the domain to a page with no
advertising.
Hewlett-Packard
declines to place any credence in Respondent’s hurried, after-the-fact attempt
to justify his bad-faith infringing
activity, and respectfully requests that
the Panel do the same, deciding this dispute with regard only to the facts and
evidence
as they existed at the time the complaint was filed. To allow Respondent’s claim that he has made
post-filing changes to his website to alter the outcome of this dispute would
open the
door for all future respondents in domain name disputes to avoid the
consequences of their actions and continue to hold domain names
containing the
famous, distinctive trademarks of others simply by claiming that they had
modified their websites after a complaint
is filed. This would defy the entire basis of the Uniform Domain Name
Dispute Resolution Policy. Borrowing
language from Respondent’s e-mail, Hewlett-Packard notes that such an outcome
would be “completely irrational and against
the spirit of the Internet and the
UDRP.”
Respondent
did not submit any additional material.
FINDINGS
Complainant
has proved each of the three necessary elements for this Panel to order the <hpcanada.com> domain name to be
transferred:
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint
on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of
law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that
a domain name should be cancelled
or transferred:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain
name has been registered and is being used in bad faith.
Complainant,
Hewlett-Packard Co., is the owner of numerous marks in connection with computer
hardware, printers, peripherals, software
and other related goods and services.
Complainant holds numerous registrations for the HP mark, including, inter
alia, U.S. Patent and Trademark Office Reg. No. 1,116,835 registered on
April 24, 1979. Complainant first used the HP mark in commerce
in 1941. The
earliest registered trademark provided to the Panel dates from 1955 (still a
rather long time for these two letters
to be used in commerce). Many decades of
extensive promotional efforts have made the HP mark famous and distinct,
especially in the
computer market where Complainant manufactures printers, See
The Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16
2002) (“Under U.S. trademark law, registered marks hold a presumption that they
are inherently
distinctive and have acquired secondary meaning”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628
(WIPO Aug. 11, 2000) (finding Complainant has rights to the name when the mark
is registered in a country even if Complainant
has never traded in that
country).
Respondent’s
<hpcanada.com> domain name is confusingly similar to Complainant’s
HP mark. Respondent’s domain name contains Complainant’s HP mark in its
entirety
(even though the mark is admittedly short), and only deviates by the
addition of a non-distinctive geographic term. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that
the domain name <cmgiasia.com> is confusingly similar to Complainant’s
CMGI mark);
see also Net2phone
Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that
Respondent’s registration of the domain name <net2phone-europe.com> is
confusingly
similar to Complainant’s mark); see also Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of Complainant
combined with a generic word
or term).
Respondent
does not have any rights or legitimate interests in the <hpcanada.com>
domain name. Respondent is simply exploiting the fact Hewlett-Packard’s
customers and potential customers might include the geographic
term “Canada” in
a domain address when looking for information on Complainant’s business in
Canada. Such use attempts to confuse
and divert Internet users based solely on
the fame of Complainant’s HP mark. Respondent’s use of the domain name
indicates <hpcanada.com> posts links to commercial websites, some
of which sell computers and related software and services that compete with
Complainant (even
if such information commonly occurs on so-called “parking”
pages, Respondent has a responsibility for the content Respondent allows
to be
posted at its site).
Additionally, Respondent makes use of
“pop-up” advertising on its website. Respondent’s use of the domain name is not
a bona-fide
offering of goods or services under Policy ¶ 4(c)(i), or
noncommercial or fair use under Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc.,
FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial
use of the domain name to confuse and divert Internet
traffic is not a
legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9,
2000) (finding no legitimate use when Respondent was diverting consumers to its
own website by
using Complainant’s trademarks); see also Chip Merch., Inc. v. Blue Star Elec.,
D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were
confusingly similar to Complainant’s mark and that
Respondent’s use of the
domain names to sell competing goods was illegitimate and not a bona fide
offering of goods); see also Ticketmaster
Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no
rights or legitimate interests where Respondent generated commercial gain by
intentionally
and misleadingly diverting users away from Complainant's site to
a competing website).
Respondent is not commonly known by the
domain name pursuant to Policy ¶ 4(c)(ii). Respondent is not authorized to make
use of the
HP mark, nor is Respondent affiliated in any way with Complainant, See
Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known
by the mark); see also Charles Jourdan Holding AG v. AAIM, D2000-0403
(WIPO June 27, 2000) (finding no rights or legitimate interests where (1)
Respondent is not a licensee of Complainant;
(2) Complainant’s prior rights in
the domain name precede Respondent’s registration; (3) Respondent is not
commonly known by the
domain name in question).
Respondent
had knowledge of Complainant’s rights in the HP mark prior to seeking
registration of the <hpcanada.com> domain name. Therefore,
subsequent registration of the infringing domain name is evidence of bad faith
under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat.
Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad
faith, when Respondent reasonably should
have been aware of Complainant’s
trademarks, actually or constructively”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000)
(finding that Respondent had actual and constructive knowledge of Complainant’s
EXXON mark given
the worldwide prominence of the mark and thus Respondent
registered the domain name in bad faith); see also Entrepreneur Media, Inc.
v. Smith, [2002] USCA9 115; 279
F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an
alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse").
Respondent’s
only possible reason for using the domain name <hpcanada.com> is
to intentionally attract, for commercial gain, Internet users to Respondent’s
website. Respondent’s infringing use constitutes
bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
Respondent registered and used the domain name in bad faith pursuant to
Policy
¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to
attract Internet users to its commercial website);
see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent
directed Internet users seeking Complainant’s site
to its own website for
commercial gain); see also State
Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11,
2000) (finding that Respondent registered the domain name
<statefarmnews.com> in bad faith
because Respondent intended to use
Complainant’s marks to attract the public to the website without permission
from Complainant).
While
Respondent’s claim the HP in <hpcanada.com>
means “home page” may be true, it strikes this Panelist as not likely to
be true, especially in light of the fact the domain name was registered
on November 3, 2002 and nothing was constructed at the site as of
the time of
this complaint. It doesn’t take much to
construct a “portal of resources for Canadian expatriates” because such a site
would consist primarily of
links to other sites.
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it is Ordered that the <hpcanada.com>
domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Panelist
Dated: March 5, 2003
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/230.html